Dealing with oppositions


Judges gavel on a stack of paper files.

Reasons for opposing a trade mark application that has been advertised as accepted

An opposition to registration of a trade mark may be opposed on the basis of any of the grounds of rejection set out in Division 2 of Part 4 of the Trade Marks Act 1995 (except for section 40) and also on the basis of sections 58 to 62A. 
The most common reasons for opposition include:

  • the trade mark is identical or very similar to another registered or pending trade mark (section 44) or an international registration that is seeking or has gained protection in Australia (regulation 4.15A)
  • deception or confusion is likely because of the reputation of another trade mark in Australia (section 60)
  • the trade mark applicant is not the true owner of the trade mark (section 58).

Reasons for opposing a removal application

Removal applications are usually based on one of the following claims:

  • that the owner of a trade mark has not used the trade mark
  • that the owner of a trade mark has not used it in good faith or
  • that the owner did not ever have any intention to use the trade mark.

If a person wants the trade mark to stay registered, they can contest the claim by opposing the removal application. Generally, these oppositions are based on claims that the trade mark has been properly used within the relevant time period set by the Act.

Reasons for opposing an extension of time

It is possible to oppose a request for an extension of more than three months or to object if you consider that:

  • sufficient time has already been allowed
  • time sought is excessive
  • a party would be adversely affected if the extension was granted.

Reasons for opposing an amendment to a trade mark application

A person may oppose if they consider that they will be adversely affected by the amendment.

Get professional advice

For specific assistance and advice you can contact an IP professional.

More information


 

Last Updated: 29/9/2011